Published 23 November 2018, The Daily Tribune

“Your brand is what people say about you when you’re not in the room,” says Jeff Bezos, the founder of tech giant Amazon. Brand recognition requires time. Unless your business is revolutionary or backed up by prominent personalities,  chances are, people would not really be talking about your start-up  business. Today, more than ever, there has been a glut of products and services that standing out from both the physical and online marketplace is a daunting business goal.

Thus, it is understandable that some of our young yet highly ambitious entrepreneurs usually channel their efforts and resources first in penetrating the market and establishing their name or brand, and putting the “intellectual property” aspect of their business later. Unfortunately, “later” usually means when the business has already received either information of a rival’s similarly sounding or looking name or brand or a notice of opposition to their belatedly filed trademark application. This does not sound like a good business start, does it? Fortunately, businesses need not go that way. The law on trademark should simultaneously complement any business’ advertising, branding or marketing efforts.

The law defines a trademark as any visible sign capable of distinguishing the goods or services (service mark) of an enterprise and includes a stamped or marked container of goods. Thus it could be a word, name, symbol, emblem, sign, or device, or any combination thereof so long as it can identify and distinguish one’s product or service (service mark) from those of others. If a brand makes a business stand out because of the positive thoughts or emotions it evokes from customers, whether actual or potential, trademark on the other hand aims to protect that from infringement by your competitors even before your brand becomes valuable.

And how does a business get that protection? As a first step, one must apply for registration of its mark with the Intellectual Property Office (IPO),  because under the present law rights in a mark are acquired through a valid registration. Application for registration can be made either traditionally or through electronic filing system.

In order to validly register the mark, it is important that the mark must not fall among the non-registrable marks under the law. Among the non-registrable marks are  those (i) “identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date” respecting the “same or closely related goods or services” or (ii) “identical with, or confusingly similar to” a “well-known” mark. Hence, to strengthen one’s chances of getting one’s mark approved, it must be arbitrary, fanciful, whimsical, and/or distinctive and not merely a copycat of another’s. In practice and as the IPO suggests, it will do well to conduct a prior search in the trademarks database to determine if there are identical or similar marks that could adversely affect the evaluation of one’s application by the trademark examiner.

If the application for trademark registration is unopposed, or the opposition is denied, the applicant would then be issued a certificate of registration. A certificate of trademark registration is prima facie evidence of the registrant’s ownership of the trademark, the validity of the registration and of the registrant’s exclusive right to use (which includes the right to license the use of) the mark in connection with the goods or services as specified in the certificate and those that are related thereto. Accordingly, the trademark owner acquires the exclusive right to sue those who have adopted a similar mark in connection with those goods or services. The registration of the trademark is good for ten years and renewable for periods of ten years.

From the filing of application, the applicant must use or continue its use of the mark in commerce so that his application would be processed. This is also required of the registered owner as a requirement to maintain his trademark registration. For this purpose, whether as applicant or as registered owner, both are required to file a Declaration of Actual Use of the mark, with supporting evidence, at the risk of having their application or renewal application denied, or the registered mark removed from the trademark register.

In filing the Declaration of Actual Use, the following periods should be borne in mind: (i) within three years from the filing date of the application; (ii) within one year from the fifth anniversary of the registration; (iii) within one year from date of renewal; and (iv) within one year from the fifth anniversary of each renewal. The Declaration of Actual Use complete with supporting evidence should be filed within these periods. Evidence of actual use can include the labels of the mark as used; downloaded pages from the website of registered owner showing that the goods are being sold or the services are being rendered in the Philippines; or brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines.

By securing the rights granted by the trademark law, one can ensure that its efforts in providing quality products or services, in establishing a loyal client base, and in creating goodwill for future expansion of its business will be adequately protected from those who may want to take a free ride on the reputation and goodwill that one has painstakingly worked on.  Think about this. The brand alone of “ Apple “, independently of its assets, is worth billions of dollars. Make your brand too astronomically valuable. But, first things first. Register it with the IPO.

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